A scratch line on a profile as a trademark indicating origin

February 11, 2016

If a design feature on a profile serves to indicate the origin of that profile, it may be registered as a trademark.

Israel trademark application 240319 filed by AL-SHURKAH ALWATANEYA LISENAET AL-ALAMENYOM WALPROFILAT (National Aluminum & Profile Co.) or NAPCO is such a mark.

240139

The mark, as shown above, was applied for aluminium profiles in class 6.

To some extent, the mark is reminiscent of the three-stripe Adidas mark, but it seems that the intention here is to monopolize a nonfunctional scratch like indentation anywhere on any profile as an indication of origin. Furthermore, if the scratch were to have a function, such as engaging a seal or the like, it could still infringe.

To avoid such problematic protection, the applicant clarified that the mark was a lengthwise 120 degree scratch on non-significant parts of the profile.

We assume that non-significant parts is to exclude such scratches that serve an aesthetic or functional purpose.

The applicant requested immediate fast-tracked examination as new requirements of the Israel Standards Office required manufacturers of products for sale in Israel to have registered trademarks identifying the goods.

After a hearing at the Israel Patent Office, the mark was allowed with the above clarification and disclaimer on 28 November 2012.

On 27 February 2013, Extal LTD filed an opposition, claiming that the mark lacked distinguishing characteristics as required by Section 8a of the Trademark Ordinance 1972 and was confusingly similar to their mark and thus was non-registerable under Section 11(13) and was thus against the public ordre, was not registerable under Section 11(5), would create unfair competition, false identification of the origins of the goods, dilution of Extal’s reputation and was thus not registerable under Section 11(6).

This scratch seems to have caused an awful lot of trouble.

The opposer, Extal, was established in 1988 and claims to specialize in developing, manufacturing, designing and marketing quality aluminium profiles. The firm is active internationally and in Israel, and has invested in advanced manufacturing equipment, automated storage and powder painting. In 2005 Extal bought up the reputation and IP rights of Mipromal. This and sales in 2011 and 2012 of hundreds of millions of Shekels are the basis of their claims to a wide reputation in Israel.

In 1988 the Opposer filed Israel Trademark Number 121163 in class 6. The mark appears as follows:

121163

The mark lapsed in 2006 due to failure to pay the renewal fees and was resubmitted in August 2011 and, following office actions, was split into two marks, Israel TM Application Numbers 253416 and 240117, each consisting of one of the elements above. Those applications were suspended pending this hearing. The Deputy Commissioner noted that scratches on the side of profile are standardized symbols for marking sections of extrusions, and the intention of the mark is a protrusion along a profile or an indention on a profile.

Extal claimed that the single scratch/protrusion has become well known in Israel and is marked on and identified with their products. The pending application is confusingly similar to their well known mark and is used to mark aluminium profiles with a triangular scratch along the profile. The distribution channels and target consumers are identical. Since the requested mark is recognized by the Israel Standards Institute as indicating that the goods come from Extal, allowing NAPCO to register the mark contravenes public order.

Extal alleged that NAPCO’s marks were filed in bad faith, since they were filed soon after their marks lapsed, and further alleged that NAPCO had filed false information.

NAPCO filed their statement of case on 14 April 2013 and denied most of Extal’s allegations but admitted that the two companies’ products were aimed at the same target audience in Israel. NAPCO claimed to have independently invented the scratch sign and to have used it since 1996, and for many years in Israel thereby developing a reputation for their products. NAPCO argued that Extal’s 121163 mark was neither a protrusion or a scratch and could not protect a scratch on an aluminium profile. To the extent that it could have provided some protection for whatever it protected, Extal had abandoned the mark. Furthermore, the publications supplied by Extal indicated that they were marking their goods, de facto, with a protrusion not an indentation.

Both sides filed numerous affidavits from employees and from people in the industry. The witnesses were cross examined in March and June 2014.

One of Extal’s arguments was that a lengthwise scratch along a profile is to minimal to serve as an indication of origin and was unacceptable under Section 8a of the Ordinance. We find this argument odd for Extal to submit since they were concurrently prosecuting a similar mark themselves. We think that the statement could fairly be used to estoppel their application.

That as may be, Ms Bracha noted that the Israel Standards Organization requires that profiles are marked. Since they are extruded in long lengths and then cut to size, a mark at one end or another is insufficient and manufacturers mark their profiles with (combinations of) protrusions and / or scratches. The Israel Standards Organization keeps a register of the various manufacturers marks but also requires the manufacturers to register trademarks. See Accumulated Regulations 7012, 30 June 2011 Section 2.2. The regulation came into effect for imported profiles on 30 November 2012.

Clearly the Israel Standards Organization regulations are not binding on the Israel Trademark Office which may refuse a mark considered as generic, as too similar to a competing mark, or for some other reason. However, the guidelines for examiners considering trademark profile markings as trademarks require them to take into account the Israel Standards Organization’s regulations when considering whether marks are inherently distinctive or have acquired distinctiveness. Thus the profile itself is functional or aesthetic and longitudinal scratches or protrusions (certainly on non-visible faces) serve as an indication of source.

There are a number of such marks with two or three indentations or protrusions such as 96177 (Extal), 96178 (Extal) 67008 Klil and 124975 (Extel). None of these have accompanying explanations.

NAPCO’s mark is a single scratch but it includes a clarification that “the mark is a lengthwise 120 degree scratch on non-significant parts of the profile.”  Thus NAPCO’s mark has inherent distinctiveness and is designed to distinguish its products from those of competitors.

The question remains whether it is indeed distinctive and whether it could create unfair competition.

Section 11(6) states that a mark that could confuse the public, falsely indicate the origin of goods or promote unfair competition may not be registered.

In this instance, the question is different from that discussed in the caselaw, such as 10959/05 Delta Lingerie vs. Tea Board China, 2006, and  the Safari Surf and Enrico Coveri cases, in that the pending mark is arguably confusable with a non-registered mark. As Seligsohn wrote in his Biblical Epic monumental Trademark and Related Laws, Shocken 1973:

A mark will be considered as a misleading mark if the public would be mislead to believe that it was the mark of another. The English Courts have dealt with this issue and ruled that a mark that is confusingly similar to one that have been registered may not be registered. However, the Israel Law does not differentiate between a registered mark and one not registered but well known. In both instances the Commissioner will refuse the mark if he believes that it will confuse the public into thinking that the mark is that of the third party. Before the Commissioner takes this step, he must be persuaded that the established unregistered mark is so well known in Israel that the public will assume that the younger application is the product of the owner of the established mark.

Extal is the largest distributor of profiles in Israel will 20% of the market. Their mark is well known. The argument centered on whether Extal had a reputation for a single line mark as they claimed, or only for a single protrusion as NAPCO argued.

The Deputy Commissioner was persuaded that Extal has a reputation for a single line mark among the relevant market and fulfills the requirements set down in 18/86 Phoenician Glass vs. Les Verreries de Saint Gobain, PD 45 (3) 225, 245-146.

There is no doubt that the original 121163 application was for scratches or protrusions as both were shown and the description was for a single line on a profile wall. Furthermore, a letter from the Israel Standards Organization appended to the file wrapper also related to a single line. Furthermore, the registration at the Israel Standards Organization was for a single protrusion or a single indentation.

The Opposer, Extal, attempted to register the two marks in one application in 2011, but the Patent and Trademark Office ordered the application split into two applications, one for an indentation and the other for a protrusion.

The opposer had a registration, lost it unintentionally, but has marked their products with a single line since the 1990s. They also had registered a design for a profile with a single line.

About half of the opposer’s product are sold to warehouses, traders or wholesalers. A significant proportion of the products are sold to window and door manufacturers and to industry. The relevant public are thus wholesalers and tradesmen.

Extal claims that 99% of their profiles are marked and that the calendars they distribute to their customers in 1994 stated “One line – the indication mark of Extal Profiles”. Their 1996 catalogue has the letters ID standing for indentification along various images, and pointing to a line that is generally a protrusion, sometimes an indentation and sometimes not clear. The catalogue even states: NOTE – Extal’s identification mark – a single line.

A further catalogue from 2006 states Micropramel and Extel’s marks are one or 2 lines stamped on the profile. [The Hebrew word used indicates stamped into, but doesn’t rule out embossed, since the word is that used for coin manufacture- MF].

Mr Yatom, testifying for Extal, argued that the choice of protrusion or scratch was left to the technicians and both were considered as indicative marks.

The Deputy Commissioner Ms Bracha notes that most images show a protruding line but some show an indentation and she concluded that the relevant audience would consider both as being Extal’s marks.

She was also impressed that despite testifying that he and others in the field could differentiate between the two suppliers’ products, A Mr Altif failed to identify the source of a sample as did other witnesses. Rather damningly, a Mr Masaroy who testified for NAPCO had trouble identifying his client’s goods.

From Mr Altif’s testimony it transpired that after painting, other marks were eradicated. It was difficult to identify the source of goods and one had to cross-check profiles with those shown on invoices. Sometimes functional or aesthetic lines were confused with those allegedly serving as indication of origin. In practice, additional indications such as delivery papers were used to identify batches. He also indicated that there was a problem with fake imports on the market.

Although the registration had lapsed, the mark was still in use and was refiled a day before this case that is being opposed. Extal expressed doubts that NAPCO was using their mark.

Extel sent private investigators to eight distributors and, without relating to scratches or protrusions, these asked workers about Extal and NAPCO’s products and marks. The conversations were submitted as evidence. Whilst noting that the investigators knew what was expected of them, the Deputy Commissioner did not feel that they had concealed information as alleged by NAPCO . As transcripts and tapes were submitted, there was no need to submit a report. That said, the Opposer chose the distributors to send the private investigators to and could select companies that they had a good relationship with. Despite certain reservations about the private investigation, the Deputy Commissioner felt that the Opposers’ mark was well known and that they were considered as being a single stripe, without differentiating between protrusions and indentations.

As to Applicant’s good faith, it is noted that although they claimed usage of the 120 degree indentation from 1996, they do have other marks in use. The opposed mark was only registered with the Israel Standards Organization from 2013, which is AFTER the Applicant was aware of the Opposer’s claims to the mark. The marks were filed almost simultaneously but NAPCO requested accelerated examination. This and the large difference in market share indicate that NAPCO may have been acting inequitably.

NAPCO ‘s choice of mark remains unclear, but regardless of whether the mark was requested in bad faith, in practice it is confusingly similar to the Opposer’s mark and thus cannot be registered.

Since the mark is refused under Section 11(6) as potentially confusing the public, whether or not the Opposer’s mark is a well known mark under Section 11(13) is moot.

Nevertheless, although perhaps not a well known mark in the sense of Section 11(13) Extal does have a reputation in the industry.

The Opposition was allowed and the mark canceled. Nevertheless, as the Opposer had not filed clear marks and had not maintained their marks they were not entitled to full damages. Had the opposer’s mark been properly registered the applicant’s mark would not have been allowed and thus the opposition proceeding would have been superfluous. Showing a reputation in a non-registered mark made this opposition particularly difficult as it made it necessary to bring evidence of reputation and of Applicant’s bad faith in registering the design.

A firm claiming to be a market leader should be more professional in registering its marks to prevent a third party registering them. Similar considerations are true for the registration with the Israel Standards Office as well.

The parties’ behaviour in the proceedings and the intermediate rulings and cross-examinations and interference are also taken into account. Thus costs of 5000 Shekels including VAT are deemed appropriate.

COMMENT

At a Patent Conference at Bar Ilan University recently, the Commissioner of Patents and Trademarks discussed the pending design law and noted that designs were being used to protect extrusion profiles.

That as may be, although scratches seem to be odd types of trademarks, it is not easy to permanently mark extrusions to indicate origin. Furthermore, apparently the first makers’ marks were scratches and the like on pieces of armour.

The issue of non-functional elements in an extrusion serving as a trademark has been discussed by the Israel Patent Office before see here.

The prime example of case-law in Israel concerning a well known but non-registered mark is the Chanel ruling of 1950, where some Israeli market his products Chanel and the well known brand Coco Chanel had not registered their marks in Israel. Another case of interest is the Versace saga here, here and here. I don’t think that the single scratch/protrusion is that well known. Extel has at least two other registered marks for two triangular scratches, two triangular and two domed protrusions, implying that the single triangular scratch can at best be one of several lines. Nevertheless, it may well be a recognized marking in the industry.

It seems that this whole case hinged around the issue of whether Extal had a reputation for a single line or for a single protrusion, and whether, if only for a single protrusion, whether the two are confusingly similar. There is no doubt that ten or twenty years ago Extal was claiming a reputation for a single line or stripe, but that is not the issue. Nor is the registration at the Standards Institute. The issue is what people in the industry see as being Extal’s mark. The Israel Patent Office, by requiring Extal’s application to be split, has already determined that a scratch and a protrusion are not the same. The private investigator’s testimony was less than satisfactory. Indeed, NAPCO attempted to get it struck from the record – see here. I note that the sorely missed UK IP Judge from Golders Green, Hugh Laddie, apparently did his own market research when considering likelihood of confusion, such as with the Burton fashion brand. I wonder if Ms Bracha could have usefully visited one of the many wholesalers in Talpiot or Givat Mordechai, or sent an Examiner, and thus determined first hand, whether Extal had a reputation for a single scratch line or not. Certainly one doubts that calendars from 2006 are being referred to, even if some may still be hanging on walls somewhere.

 


Opposition to Patent on Grounds of Failure to Cite Prior Art Results in Withdrawal and Hugh Cost Ruling

February 10, 2016

tweedledumdee
Orbotech and Camtek are old enemies. Camtek have successfully opposed a number of Orboetch patents from issuing in Israel.

This time, it was Orbotech, represented by Gilat Bareket who successfully opposed Camtek’s patent application No 208585 for “SYSTEMS AND METHODS FOR NEAR INFRA-RED OPTICAL INSPECTION”, and when the application was abandoned, filed a request for 100,400.5 Shekels in accumulated costs.

The request was supported by Affidavits and invoices. Orbotech further claimed that Camtek failed to inform the Israel Patent Office of three citations against the corresponding application in China. In Israel, there is a duty of disclosure of relevant prior art. In this case, Orbotech alleges that Camtek new about these citation in December 2013 and responded to the Chinese patent office in April 2014. However, the citations were not reported to the Israel Patent Office which allowed the patent at the end of November 2014. Orbotech considers that this act of bad faith made the Opposition proceedings necessary and so Camtek should be punished for failing to report the art.

Orbotech opposed the allowed application on 26 February 2015 and requested and received an extension to file their statement of case. On 20 April 2015, they approached Camtek and requested that they abandon the application noting Camtek’s failure to inform the Israel Patent Office of the publications cited in China. Camtek ignored this approach.
On 25 June 2015, Orbotech filed their statement of case. On 21 September 2015, Camtek abandoned the application. Orbotech claimed costs of 100,400.5 Shekels, for learning the application, reviewing the file wrappers in Israel and China and supported the cost analysis with affidavits.

Camtek (represented by Adi Levit) responded that the costs were unreasonable, disproportionate and Orbotech’s counsel’s rates were unreasonable. They alleged that the statement of case included short and irrelevant publications, and argued that it was unreasonable to issue costs as if the opposition was fought to the bitter end. Finally, regarding the Chinese citations, as the case was allowed under Section 17c on the basis of US 8,492,721. Camtek argued that they were not obliged to inform the patent office about the citations in China.

Orbotech countered that in the past similar costs had been awarded for a statement of case that resulted in a patent application being abandoned. They argued that there was nothing to prevent the Patent Office from ruling on Camtek’s hehaviour during patent prosecution and noted that Camtek had received costs at a similar hourly rate when they had won previous encounters.

Orbotech was referring to IL 179995 where the agent of record, Reven Brochovsky forgot to challenge the costs submitted by Adi Levit on behalf of Camtek, and so the rather enormous costs of 296,895 Shekels were awarded. See here and here.

In her analysis, the Deputy Commissioner Ms Jacqueline Bracha ruled that there were three issues:

  1.  Reasonable costs for an opposition that resulted in an allowed patent being abandoned after the statement of case was filed.
  2. The duty of disclosure regarding the Chinese citations
  3. Whether Camtek’s failure to disclose the Chinese citations resulted in the Statement of Case being required.

Clearly the three questions are inter-related and the reasonableness of the costs is determined by the extent that the failure to disclose required the statement of case to be submitted and in what detail.

The Deputy Commissioner understands Section 18 as requiring the Applicant to continuously update the Israel Patent Office regarding art cited abroad up until allowance of a case.

This case was allowed on 30 November 2014 and Camtek knew about the citations before this time.

Section 18 does not differentiate between the duty of disclosure for a patent being allowed after examination on its merits under Section 17a and 17b, and a patent allowed under section 17c based on a corresponding application being allowed by an examining jurisdiction that the Israel Patent Office is prepared to rely on.

Furthermore, Section 17d notes that the Israel Patent Office can refuse to allow a patent under Section 17c based on art that they are aware of or is brought to their attention during the examination process. This is seen to counter Camtek’s interpretation of the Duty of Disclosure since regardless of Section 17c during the examination process, i.e. prior to allowance, the Applicant is still obliged to provide the patent office with details of relevant prior art.

Additionally, as clear from IL 219586 Data Detection Technologies vs. Collischan GMBH& Co. (9 March 2015) and from 33666-07-11 Unipharm vs. Sanofi (8 October 2015),  there is a duty n the applicant of candour and equitable behaviour.

Furthermore, the purpose of the duty of disclosure and logic undermine any interpretation that invoking Section 17c removes the obligation to report prior art, and the obligation starts prior to examination so is independent of section 17c.

Thus Camtek’s argument that since allowance was under section 17c, there was no need to inform the patent office about the Chinese citations is rejected.

The timeline makes clear that Camtek’s failure to inform the Israel Patent Office regarding the prior art was an omission that is unacceptable, but since the Applicant abandoned the patent, the issue of applying the sanctions under Section 18c is moot.
In the cancellation request concerning 94634 Israel Industrialists vs. R Roy Calne (26 April 2015) it was ruled that Applicants behavior during an opposition can certainly affect costs. The question remains whether the Applicant’s behavior during the patent prosecution can affect the costs awarded in the opposition proceeding.

Citing BAGATZ 891/05 Tnuva Cooperative vs. The Office for Imports PD 60(1) 600, 615, the Deputy Commissioner reasoned that where applicant’s behavior results in an opposition proceeding being required, it is reasonable to apportion costs accordingly.
The question of whether the patent would have issued had the Chinese patents been made of record is moot as the Applicant finished the prosecution without citing them. However, it was this failure that resulted in the opposition being necessary and this issue being raised.

Camtek’s complaint regarding Gilat Bareket’s hourly rate is not accepted since the rate is similar to that charged by other offices. Examination of the number of meetings and lawyer arguments indicates that they were justified. The only thing not justified was the costs related to the extension for filing the statement of case, and so 18886 Shekels were deleted from the requested costs. Noting that Orbotech did try to bring this case to a close without filing a statement of case by informing Camtek of their failure to report the Chinese citations and giving them an opportunity to withdraw the application, the Deputy Commissioner ruled that 98,514.5 Shekels costs be paid.

COMMENT

Adi Levit does not prosecute patents so did not prosecute this patent and was not responsible for the failure to cite the Chinese patents. He was, however, responsible for the Unipharm vs Sanofi decision, where he successfully argued the duty of candour. This undermines his argument regarding the duty of disclosure when invoking Section 17c.
That said, one wonders to what extent Orbotech needed to simply compare the prior art cited in Israel with that cited abroad and oppose the patent on the grounds of failure to disclose, and to what extent, studying the citations was necessary. 98,514.5 NIS does seem an awful lot of money for a statement of case in an opposition of this kind.


MiPAD and iPAD

February 10, 2016
ipad

i-PAD

Mi Pad

MI PAD

Apple Inc. filed Israel Trademark Application Numbers 261449 and 261500 for IPAD MINI and IPAD AIR in November 2015. The marks cover Handheld mobile digital electronic device comprising a tablet computer, electronic book and periodical reader, digital audio and video player, camera, electronic personal organizer, personal digital assistant, electronic calendar, and mapping and global positioning system (GPS) device, and capable of providing access to the Internet and sending, receiving, and storing messages and other data in class 9.

Xiaomi Singapore Pte LTD filed Israel Trademark Application Numbers 270078 for
MI PAD in May 2015 for Portable and handheld electronic devices for transmitting, storing, manipulating, recording, and reviewing text, images, audio, video and data, including via global computer networks, wireless networks, and electronic communications networks; tablet computers, electronic book readers, periodical readers, digital audio and video players, digital camera, electronic personal organizers, personal digital assistants, electronic calendars, mapping and global positioning system (GPS) devices; computer peripheral devices; computer and portable and handheld electronic device accessories, namely, monitors, displays, keyboards, mouse, wires, cables, modems, disk drives, adapters, adapter cards, cable connectors, plug-in connectors, electrical power connectors, docking stations, charging stations, drivers, battery chargers, battery packs, memory cards and memory card readers, headphones and earphones, speakers, microphones, and headsets, cases, covers, and stands for portable and handheld electronic devices and computers; computer software for the development of content and service delivery across global computer networks, wireless networks, and electronic communications networks; downloadable audio works, visual works, audiovisual works and electronic publications featuring books, magazines, newspapers, periodicals, newsletters, journals and manuals on a variety of topics; computer software for transmitting, sharing, receiving, downloading, displaying, transferring, formatting, and converting content, text, visual works, audio works, audiovisual works, literary works, data, files, documents and electronic works via portable electronic devices and computers; computer game programs; downloadable music files; downloadable image files; video telephones; navigational instruments; screens [photoengraving] in class 9, and for Telecommunication access services; communication by computer; transmission of data and of information by electronic means, broadcasting or transmission of radio and television programs; provision of telecommunications connections to computer databases and the Internet; electronic transmission of streamed and downloadable audio and video files via computer and other communications networks; web casting services; delivery of messages by electronic transmission; streaming of video content, streaming and subscription audio broadcasting of spoken word, music, concerts, and radio programs, broadcasting prerecorded videos featuring music and entertainment, television programs, motion pictures, news, sports, games, cultural events, and entertainment-related programs of all kinds, via computer and other communications networks; providing on-line bulletin boards for the transmission of messages among computer users concerning entertainment in the nature of music, concerts, videos, radio, television, film, news, sports, games and cultural events; communication services, namely, providing users access to communication networks for the transfer of music, video and audio recordings; teleconferencing services; providing Internet chatrooms; voice mail services; transmission of digital files in class 38.

Since Apple’s marks had not yet issued, and due to the apparent similarity between the marks and the goods, a competing marks procedure under section 30 of the Trademark Ordinance ensued.

In competing marks procedures some weight is given to the first to file, but the extent of use and equitable behavior are generally more important.

In this instance, Apple also has issued trademark numbers 226418, 226421, 226419 for IPAD and the Examiner considered that Xiaomi Singapore Pte LTD.’s application was confusingly similar to these as well.

Both sides were invited to produce evidence supporting their claims, and oddly, Apple submitted an affidavit from Thomas R. La Perle, the legal counsel of Xiaomi! Xiaomi did not submit evidence at this stage.

A hearing was scheduled for 1 February 2016, and then cancelled. The Israel Trademark Office therefore has ruled on which mark should proceed to examination, based on the evidence submitted and the response to the office action from Xiaomi against the issued Apple marks.

Apple claims that the IPAD was launched in 2010. The smaller IPAD MINI and IPAD AIR models were launched in 2012 and 2013 and the marks were widely registered. Apple spent over a billion dollars in promoting the devices in 2014 and had sales exceeding 70 billion dollars. Apple further claims that MIPAD is confusingly similar to IPAD, with the difference between IPAD and MIPAD being one letter. The products are confusingly similar. In Israel there is no Apple Store, so the distribution channels are similar.

Xiaomi claims that MI means rice in Chinese and virtually all Xiaomi’s products include the term MI since rice is part of the corporation’s family [I don’t understand what this means, either, and suspect that they are trying to claim that they started as a rice distributor and branched out into other areas. The point of the argument is that they are not trying to free ride on Apple’s reputation and are arguing that any similarity is coincidental and not evidence of bad faith – MF].

Oddly, at the evidence stage, Apple submitted an affidavit from Thomas R. La Perle, the CEO of Xiaomi. Xiaomi did not submit evidence and a scheduled hearing was cancelled, and the Deputy Commissioner ruled based on the evidence including Xiaomi’s argument in response to the office action claiming similarity to issued Apple marks for IPAD.

Xiaomi argued that IPADs marks were combinations of descriptive elements. They submitted evidence of advertising and sales in Asia and elsewhere but this did not focus on tablets and so was given little evidentiary weight.

Xiaomi also showed that their MI mark was registered, but this was considered as not addressing the similarity issue between MIPAD and IPAD.

In her ruling, the Deputy Commissioner Ms Jacqueline Bracha noted that following the Appeal 5454/02 Tiv Tam vs Abrosia ruling, it was proper to consider the marks in their entirety rather than the separate elements thereof since customers consider marks in their entirety. Consequently, the fact that the words MINI and AIR may be descriptive and generic did not render IPAD AIR or IPAD MINI as descriptive or generic, by virtue of the IPAD which was descriptive, whether inherently so or by acquiring distinctiveness [due to the advertising, sales, etc.].

That MI means rice is unlikely to be known by most Israelis. Citing “Kerly’s Law of Trade Marks and Trade Names”, 15th ed. (2011) p. 301:
“The perception of marks in the mind of the average consumer of the category of goods or services in question plays a decisive role in the global appreciation of the likelihood of confusion.”

Since MIPAD has I next to Pad, the similarities between MIPAD and IPAD are compelling.

Regardless of whether the visual similarities between the MIPAD and the IPAD are due to functional reasons or design, they are very similar and this further increases the likelihood of confusion. See 4250-07-14 Gewiss S.P.A. vs. Timnah Electricity LTD
Both sides accept that the distribution channels and consumer base is identical, therefore it is concluded that there is a real likelihood of confusion.

In a competing marks procedure the three considerations are who filed first, scope of use and equitable behavior. Apple filed first. They have additional products in the IPAD line which indicates that their choice of mark was not an attempt to copy MIPAD. They also have other marks including AIR, such as MACBOOK AIR.

Furthermore, Apple has produced compelling evidence of greater use.

As Xiaomi has successfully registered its logo MI logo in Israel and elsewhere, one cannot rule out that their pending mark was chosen in good faith. Furthermore, had they attempted to register the mi logo together with PAD, this may have helped their case.
The similarity between the marks rules out coexistence. After weighing up everything, Apple’s marks are considered as preferable to continue to examination and Xiaomi’s mark for MIPAD is refused.

Since there was no hearing and Xiaomi did not take an active part, but also did not inform the Israel Patent and Trademark Office that they would not be attending, Xiaomi were ordered to pay costs of 6000 Shekels to Apple.

Ruling in competing marks procedure concerning pending trademark numbers 2610449, 261500 and 270078 (Xiaomi vs. Apple) by Deputy Commissioner Ms Jacqueline Bracha, 26 January 2016.


Large Consignment of Fake Plumbing Components Destroyed at Importer’s Cost

February 10, 2016

huliot

When one thinks of fake goods, luxury items such as Rolex watches and perfumes spring to mind. Software and music is also copied and distributed easily, but one doesn’t think that anyone would fake plumbing materials.

Actually, fake light switches, plasterboard, aluminium profiles and plumbing materials are made.  Huliot Have now managed to have a large consignment of 88,000 fake plastic plumbing components destined for Gaza destroyed in Ashdod Port at the importer’s cost.

Huliot a long established manufacturer of pipes and plumbing components based at Kibbutz Sde-Nehemiya.

A few months ago, the Customs Office at Ashdod port compounded a large consignment of counterfeit plastic plumbing components imported from China and destined for Gaza.  The plastic components had the registered trademarks of Huliot A.C.S. Ltd embossed on each component and were also packaged in packaging bearing Huliot’s name and distinctive green diamond logo.

The Customs Office were suspicious of the large consignment because the goods appeared to be of low quality so IP Factor who is the registered Agent of Huliot trademarks was contacted by the Customs Office. We take this opportunity to complement the Ashdod Customs for their vigilance in this matter.

Adv. Aharon Factor of our firm, IP Factor, filed a petition at the Tel Aviv District Court for a restraining order and for an order for the destruction of the goods.  The parties subsequently negotiated an out-of-court settlement further to which the goods were destroyed at the importer’s expense and some legal costs were paid by the importer to Huliot.

Huliot’s CEO Mr. Paul Steiner believes that the large consignment has a retail value of about 400,000 Shekels and would have tarnished Huliot’s reputation for high quality products.  Although destined for Gaza, Mr Steiner believes that some of the goods would have found their way back to Israel which would have caused even more damage to Huliot’s reputation.

Mr Steiner is a great believer in IP development and enforcement and engages veteran Israel Patent Attorney Simon Kay as part-time in-house IP Manager. Simon has developed a vigorous strategy to protect the company’s intellectual property and reputation, including patenting developments, registering the designs of new components, marking components and their packaging with Huliot’s logos and trademarks.  IP Factor handles the trademark portfolio for Huliot and for some of Simon’s other clients.

COMMENT

In a recent post we noted that suppliers of fake Viagra pills had received prison sentences since the product posed a danger to the public. We noted that most fake Viagra pills are merely ineffective rather than dangerous. Fake building materials can cause tremendous damage. Sewage and grey water piping that cracks can contaminate drinking water supplies. Whilst untreated individual erectile dysfunction can adversely affect reproduction, cholera can kill millions. One of my clients has developed and is launching a child safety device for adjusting car seatbelts to children. The device has undergone very extensive safety testing. Fake devices are now being advertised on Chinese wholesale websites. Quite possibly, these are inferior and unreliable products. Perhaps the courts and police should reconsider what types of fake goods are dangerous and what importers and distributors should be sent incarcerated?


Costs in Aminach vs. Gabai

February 10, 2016

SIDS
Aminach is a large mattress manufacturer. They opposed a patent application No. 179840 filed by Moshe and Anat Gabai that allegedly reduced likelihood of Sudden Infant Death Syndrome (SIDS). Theyir invention was a foam mattress with holes punched out so that a face down child could not be suffocated by rebreathing trapped exhaled carbon dioxide.

The Israel Patent Office refused the patent by accepting Aminach’s submission that the mattress did not have proven efficacy. The Applicants appealed this ruling to the courts and the whole thing went to the Supreme Court and back down, and eventually the patent was registered but with a narrower claim set which specified that the the mattress may help in cases of SIDS attributable to rebreathing the same air.

Our report on the original ruling is here. Our report on the Supreme Court ruling is here.

Aminach, represented by Colb, filed for costs of 444,615.99 Shekels for all actions. As a fall-back position, they requested costs of 300,796.37 Shekels for the costs from when the Gabais appointed legal counsel, and as a further fall back position, costs of 113,841.36 Shekels from when the case was referred back to the Patent Office.
The Gabais, now represented by Glazberg, Applebaum & Co, opposed this. The courts decided not to rule costs and this was an active decision and not a lacuna and the issue was therefore moot. As to the patent office costs, the Gabais claimed that essentially they had won, and all Aminach had achieved was a claim narrowing. The Gabais alleged that the costs were incurred because Aminach and their lawyers had leveraged their greater resources.

The Gabais claimed that the costs were unnecessarily incurred. For example, Aminach did not need to compare their products with the patent claims. Aminach argued that where the courts had not ruled costs, they could be ruled, and where actual costs were considered excessive, the patent office could award what they considered to be reasonable.
Aminach were awarded 40,000 Shekels legal fees and 5,597 Shekels costs for the original opposition. They were awarded a further 20,000 Shekels by the District Court who upheld the Patent Office Decision and was not prepared to review additional experimental evidence. The Supreme Court didn’t award costs (arguably declined to do so), and nor did the District Court when ruling that the case should be returned to the patent office. This decision was also appealed to the Supreme Court as was a request to stay the ruling until the end of the process. No costs were awarded for this either.

The Deputy Commissioner then accepted new evidence and the Applicants corrected the specification. Costs of 5,500 Shekels were awarded to Aminach.

The Deputy Commissioner noted that all courts had addressed the costs issue, even if to rule that costs were not granted. She also noted that Section 162B of the Israel Patent Law 1967 only empowers the Patent Office to rule costs for proceedings before it. Unless the courts specifically delegate the awarding of costs to the Patent Office, it has no authority to rule costs for appeal proceedings before the courts. Further support for this was found in section 462 of the Civil Court Procedure and in the cost ruling regarding IL 165705 Israel Aircraft Industries vs. Rafael Advanced Warfare LTD, 12 July 2012. Furthermore, Circular MN 80 if these have already been awarded.

The only costs to be considered, therefore, are the costs related to the additional evidence submitted by each side after the Supreme Court ruling and the subsequent hearing including cross-examination of the expert witnesses and the correction to the specification for which costs were previously awarded.

The Deputy Commissioner then went through the various invoices and decided which ones related to the proceedings before her and concluded that costs of $21,864.55 were attributable to the proceedings before her. She also noted that the Gabais had chosen to cross-examine witnesses and submit evidence prior to narrowing the claim set which had incurred the costs.

COMMENT

I rather enjoyed this epic battle between the little inventor who was not represented, and an Israel corporation with expensive IP counsel. I suspect that the Israel Patent Profession as a whole found it quite entertaining. I was critical of the original patent office ruling to cancel the patent on appeal and do not think that the patentees can fairly be criticized for conducting tests and submitting and cross-examining expert witnesses, whether or not they could have reached a compromise with Aminach.

In awarding full actual costs for the proceedings before her, I feel that Deputy Commissioner is punishing the patentees for what was originally a poor decision by her. If the Supreme Court felt it could rule on the Appeal against the District Court’s ruling without awarding costs, we think that the patent office could have as well.

Although it is detailed and not obviously unreasonable, maybe the Gabbais and Glazberg will appeal the cost ruling anyway?

Obviously apparently healthy babies could die for a number of reasons, some of which doctors may not yet understand. Nevertheless, it would be interesting to see if baby mattresses with air holes become common place and if this has a statistically significant effect on SIDS which is very distressing for the families concerned.


Clik-Lock

January 20, 2016

Michel Falgir and Elias Or-Hayim filed Israel Trademark Application No. 254327 for “Clik-Lock”.

After it published as allowed, Assa Abloy AB opposed the mark on 27 August 2015. The period for responding has long passed and the Applicants did not respond. They are therefore considered as having abandoned their mark and in view of the material in Assa Abloy AB’s statement of case, costs of 2500 Shekels are awarded to them.


Glide

January 19, 2016

Glide Talk LTD filed Israel Trademark No. 252076 for the stylized mark glide as shown below:

Glide

The application covered Optical apparatus; apparatus for recording, transmission or reproduction of sound, images, or video; computer application software for mobile phones, tablets, computers, notebooks, and handheld computers, namely, software for voice, text, picture and video messaging; computer software for internet and telecommunications messages; computer and video game software for mobile phones, tablets, computers, notebooks and handheld computers; Computer software for providing access to computer and video games through online social networking websites; all the aforesaid excluding blank and pre-recorded USB flash drives and Telecommunication services, namely, providing online and telecommunication services between and among users of desktop and tablet computers, mobile and handheld computers, and wired and wireless communication devices concerning topics of general interest; enabling individuals to send and receive messages via online messaging in the field of general interest; providing online communications for registered users to share information, photos, audio and video content about themselves, their likes and dislikes and daily activities, to get feedback from their peers, to form virtual communities, and to engage in social networking; broadcasting over the Internet, electronically transmitting, posting, displaying, and tagging information of audio, video and textual content; transmission of greeting cards over the Internet or other communications network; all included in class 38.

SanDisk Corporation opposed the mark. In this instance, the parties came to an agreement under which Glide Talk LTD would amend the list of goods in class 9 and SanDisk Corporation would abandon the Opposition.

The Israel Patent Office does not rubber stamp such agreements automatically, since in addition to the interests of the parties, there is a public interest so where such agreements leave a situation where there is a reasonable likelihood of confusion, the Israel Patent Office may decide not to ratify such agreements and can continue an Opposition in the shoes of the Opposer becoming inquisitional instead of merely observing and adjudicating.

In this instance, Glide LTD undertook to add the following to the list of goods in Hebrew and English:

and excluding software used (a) for security and encryption of data stored in blank and pre-recorded USB flash drives, and (b) to facilitate, enable and manage flash storage of electronic data and electronic files stored in blank and pre-recorded USB flash drives; all included in class 9.

Since this is a disclaimer that limits the range of goods, it was allowable under Regulation 22(a)2 of the regulations and accorded with Section 21 of the Ordinance granting the Commissioner authority to amend the list of goods to disclaim and clarify.

Ms Yaara Shoshani Caspi allowed the amendment and closed the opposition, ruling that each side should bear its costs.

COMMENT

Coming to a mutually acceptable resolution in a fairly amicable way is generally in the interest of all parties. Some attorneys are adversarial and fight uneccessary battles. In this case, the attorneys representing the parties have saved the parties time and money by identifying the problematic issue and bringing this to a quick resolution.

 


Follow

Get every new post delivered to your Inbox.

Join 682 other followers